CANCELLATION No 28 227 C (REVOCATION)
Renfro Corporation, 611 Linville Road, Post Office Box 908, 27030, Mount Airy, North Carolina, the United States of America (applicant), represented by Best Rechtsanwälte PartmbB, Hostatostr. 26, 65929, Frankfurt am Main, Germany (professional representative)
a g a i n s t
Futz Inc., 129 Denlow Blvd, M3B 3J7, Toronto, Ontario, Canada (EUTM proprietor), represented by Bristows LLP, 100 Victoria Embankment, EC4Y 0DH, London, the United Kingdom (professional representative).
On 22/10/2019, the Cancellation Division takes the following
1. The application for revocation is upheld.
2. The EUTM proprietor’s rights in respect of European Union trade mark No 11 674 017 are revoked in their entirety as from 03/10/2018.
3. The EUTM proprietor bears the costs, fixed at EUR 1 080.
The applicant filed a request for revocation of European Union trade mark registration No 11 674 017 ‘FÜTZ’ (word mark) (the EUTM). The request is directed against all the goods covered by the EUTM, namely
Class 18: Leather and imitations of leather, and goods made of these materials and not included in other classes; belts; animal skins, hides; trunks and travelling bags; bags and purses; umbrellas, parasols and walking sticks.
Class 25: Clothing; footwear; headgear; hosiery.
Class 26: Badges for wear (not of precious metals); lace and embroidery, ribbons and braid; buttons, hooks and eyes, pins and needles; hair ornaments; hair accessories; hair clips.
The applicant invoked Article 58(1)(a) EUTMR.
SUMMARY OF THE PARTIES’ ARGUMENTS
The applicant argues that the EUTM has not been put to genuine use in the European Union for a continuous period of five years in connection with the goods in respect of which it is registered, and there are no proper reasons for non-use. It is requested for the EUTM to be revoked in its entirety.
The EUTM proprietor argues that it is a clothing manufacturer, particularly producing socks, whose production is based in Canada. The proprietor had applied for various trade mark registrations, including in the European Union. It claims that it made its initial sales in North America under its two brands FÜTZ and FÜTZSOCKS since 2014 through a department store. The proprietor states that the webpage for the sale of the socks was available for placing orders by EU consumers in 2015-2016. The commercialising of the goods took place: through a media agency, who had placed banners on its webpage, through the proprietor’s own websites, and through an Italian supplier. It is explained that the manufacturing of socks also took place in Italy and the mark was affixed to the products. From Italy the products were exported in the European Union. The proprietor also claims that its marketing strategy has enlarged in August 2018, by taking direct steps to trade by shipping in the United Kingdom.
It is finally stated that the revocation action taken by the applicant is due to its applications for registration of trade marks in the EU for socks and hosiery. It is concluded that the submitted evidence clearly proves that the use of the EUTM is genuine. The proprietor requests that the application for revocation is rejected in its entirety.
On 04/10/2018, in accordance with Article 17(1) EUTMDR, the Office gave the EUTM proprietor until 09/12/2018 to submit evidence of use of the EUTM. Following a request by the proprietor this time limit was extended until 09/02/2019. As 09/02/2019 was a non-business day, the deadline was automatically extended to the first working day, namely 11/02/2019. On 11/02/2019, within the time limit, the EUTM proprietor submitted evidence of use, which is listed further below. It submitted (on the same day) a request for another extension of the time limit, claiming a delay of collecting documents and the need for obtaining documents from several Member States.
Pursuant to Article 101(1) EUTMR and Article 68 EUTMDR, by a letter, dated 13/02/2019, the Office rejected the request of the proprietor for a second extension of the time limit, as the proprietor failed to provide information about exceptional circumstances, which would justify the extension of that limit. The proprietor did not submit evidence that would explain the delay and prove the claimed statements. However, for reasons of equity the Office granted the proprietor a time limit until 19/02/2019. The proprietor did not submit any further evidence. Therefore, the Cancellation Division proceeds with the examination of the evidence submitted on 11/02/2019.
GROUNDS FOR THE DECISION
According to Article 58(1)(a) EUTMR, the rights of the proprietor of the European Union trade mark will be revoked on application to the Office, if, within a continuous period of five years, the trade mark has not been put to genuine use in the Union for the goods or services for which it is registered, and there are no proper reasons for non-use.
Genuine use of a trade mark exists where the mark is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use requires actual use on the market of the registered goods and services and does not include token use for the sole purpose of preserving the rights conferred by the mark, nor use which is solely internal (11/03/2003, C‑40/01, Minimax, EU:C:2003:145, in particular § 35-37, 43).
When assessing whether use of the trade mark is genuine, regard must be had to all the facts and circumstances relevant to establishing whether commercial exploitation of the mark is real, particularly whether such use is viewed as warranted in the economic sector concerned to maintain or create a market share for the goods or services protected by the mark (11/03/2003, C‑40/01, Minimax, EU:C:2003:145, § 38). However, the purpose of the provision requiring that the earlier mark must have been genuinely used ‘is not to assess commercial success or to review the economic strategy of an undertaking, nor is it intended to restrict trade-mark protection to the case where large-scale commercial use has been made of the marks’ (08/07/2004, T‑203/02, Vitafruit, EU:T:2004:225, § 38).
According to Article 19(1) EUTMDR in conjunction with Article 10(3) EUTMDR, the indications and evidence of use must establish the place, time, extent and nature of use of the contested trade mark for the goods and/or services for which it is registered.
In revocation proceedings based on the grounds of non-use, the burden of proof lies with the EUTM proprietor as the applicant cannot be expected to prove a negative fact, namely that the mark has not been used during a continuous period of five years. Therefore, it is the EUTM proprietor who must prove genuine use within the European Union, or submit proper reasons for non‑use.
In the present case, the EUTM was registered on 02/10/2013. The revocation request was filed on 03/10/2018. Therefore, the EUTM had been registered for more than five years at the date of the filing of the request. The EUTM proprietor had to prove genuine use of the contested EUTM during the five-year period preceding the date of the revocation request, that is, from 03/10/2013 to 02/10/2018 inclusive, for the contested goods listed in the section ‘Reasons’ above.
On 11/02/2019 the EUTM proprietor submitted evidence as proof of use.
The evidence to be taken into account is the following:
Annexure 1: archive printouts from www.sears.com, provided by the Wayback Machine, dated 27/10/2015-30/04/2017, which give list of countries to which ‘Sears’ (store) offers international shipping. It also gives an option for currency selection.
Annexure 2: email correspondence, dated 03/06/2014- 04/08/2015, between a representative of ‘HG International’, Ontario (with email extension .ca) who orders some samples of socks to a representative of socks manufacturer (with email extension .it). The socks manufacturer provides information to ‘HG International’ for some materials and prices of socks. On 31/07/2015 ‘HG International’ wrote to inform that the website http://futzsocks.com is ready to launch and prices are needed for the samples that the manufacturer has provided. The latter informs about the price list of the socks and ‘Price- list FUTZ 2015’ is also attached, which contains three columns: the first has indications men, women, baby; the second some product specifics, such as silk crew and the third shows prices in Euro. There is also another price list attached with product codes, which contains product numbers and images of socks with some additional indications of the product. The price-list, however, refers to date entries in 2018, such as ‘approved August 1 2018’. An image of a sock bearing the following sign is depicted .
Annexure 3: a printout from Canada’s Business Registries, containing information on the proprietor’s company; an archive printout from http://futzsocks.com, dated 14/11/2017, depicting a photo of socks, the sign is shown above them.
An affidavit, signed by the business manager of the proprietor, dated 07/02/2019. It generally confirms and further details the statements of the EUTM proprietor already provided above. It is claimed that the proprietor’s marks were promoted in the EU between 2015 and 2018 for the amount of tens of thousands of Canadian dollars. The preparations for creating market share in the EU consisted of draft proposal of the design of the company’s website in June 2014 and creating the website. In August 2018 was initiated the project of increasing the direct sales on the EU market ‘by improving the capability of the website’ and it was completed in December 2018. This resulted in increased direct sales in the UK. The affidavit further refers to the following attachments:
Annexure 1: registration certificates of EUTMs of the proprietor.
Annexure 2: ‘Futz Inc order summary’ table, Fall 2016, showing order information by a customer in Canada. There are also invoices, dated between 14/09/2015 and 24/11/2016, issued by HG International, Ontario Ltd. (with address in Canada) to a company in the USA and Canada, the items listed are indicated as SKS, product number and some specifics of the products (e.g. colour) are provided.
Annexures 3-4: archive printouts from http://futzsocks.com, dated between 11/11/2017 until 23/08/2018, depicting a variety of women’s, men’s and kids´ socks with the sign placed at the top of the page. Other screenshots from the same page (https://futzsocks.com), bearing only the date when taken, namely 03/01/2019 and 06/02/2019 show a variety of socks (prices are given in EUR or GBP) and claim ‘free shipping to the USA, UK, and Canada’. There are also two invoices, issued to HG International, (in 2015) for ‘Illustrations for Fütz line Mens and Womens socks’ and ‘Model Fee-futz lookbook shoot’.
Annexures 5-6: a contract for a webpage development, which initial page states that it is updated June, 2014, but the signature page is actually signed and dated 21/08/2018. The contract concerns a project entitled ‘fütz Web design & Development’. It details the steps taken to elaborate the website for ‘Fütz socks’ and its online retail. There is also an invoice, issued to HG International in 2015 by a company in Canada, for consulting and activities related to the development of ‘Fütz Socks website´.
A proposal, addressed to ‘Futz’ for ‘the validation, development and refinement of its brand voice and positioning, storytelling and copywriting as applied to its current brand Style Guide’, is attached. It is signed on 21/08/2018 by the person (with address in Canada) issuing the proposal and a representative of ‘Futz’. The proposal is related to the creation of a ‘style guide’ for Fütz socks. A ‘Style Guide’, draft 10, with the following sign is also attached. It depicts variety of socks with the above shown sign by them or on them, as well as a table with some product codes.
Annexure 7: two online order forms (invoices), issued on 22/12/2018 and 26/12/2018 (outside the relevant timeframe), to unknown entity/person in cities in the United Kingdom for an order of altogether six pairs of socks, provided by pictures and product codes; printouts from the website www.futzsocks.com are also provided, which contain images of socks (and their product specifics) and depict the following sign .
The proprietor refers to applications made by the applicant for EU trade mark registrations as a possible reason for filing the present application for revocation. The Cancellation Division notes that the subject of the present proceedings is to establish whether the conditions laid down in Article 58(1)(a) EUTMR, as specified above, are present or not. Therefore, the intention behind the present action for revocation (or any trade mark applications that the applicant may have), are irrelevant and could not be a subject of the present proceedings. It follows that this argument of the proprietor has to be set aside.
As far as the affidavit is concerned, Article 10(4) EUTMDR (applicable to cancellation proceedings by virtue of Article 19(2) EUTMDR) expressly mentions written statements referred to in Article 97(1)(f) EUTMR as admissible means of proof of use. Article 97(1)(f) EUTMR lists, as means of giving evidence, sworn or affirmed written statements or other statements that have a similar effect under the law of the State in which they were drawn up. As far as the probative value of this kind of evidence is concerned, statements drawn up by the interested parties themselves or their employees are generally given less weight than independent evidence. This is because the perceptions of a party involved in a dispute may be more or less affected by its personal interests in the matter.
However, this does not mean that such statements do not have any probative value at all.
The final outcome depends on the overall assessment of the evidence in the particular case. The probative value of such statements depends on whether or not they are supported by other types of evidence (labels, packaging etc.) or evidence originating from independent sources.
In view of the foregoing, the remaining evidence must be assessed in order to see whether or not the contents of the declaration are supported by the other items of evidence.
Furthermore, some of the evidence originates from (or refers to) the company ‘HG International’.
According to Article 18(2) EUTMR, use of the European Union trade mark with the consent of the proprietor is deemed to constitute use by the proprietor.
Irrespective of whether the company ‘HG International’ is a legal ascendant of the proprietor or in any way economically related to it, the fact that the EUTM proprietor submitted evidence of use of its mark by a third party implicitly shows that it consented to this use (08/07/2004, T‑203/02, Vitafruit, EU:T:2004:225).
To this extent, and in accordance with Article 18(2) EUTMR, the Cancellation Division considers that the use by this other company was with the EUTM proprietor’s consent and, therefore, is equivalent to use by the EUTM proprietor itself.
Assessment of genuine use
Having examined the material listed above in its entirety, the Cancellation Division finds that the evidence is insufficient to establish genuine use of the trade mark.
Although some of the evidence refers to the relevant time (e.g. printouts from http://futzsocks.com and the email correspondence), and references are made to goods that can be considered relevant (i.e. socks), the proprietor has failed to prove the extent of use of its mark in the relevant territory.
As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, its commercial volume, duration and frequency.
The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.
The proprietor claims that it had taken promotional and marketing measures across the relevant period in the European Union to first establish and then create market share for the products marked with the EUTM. It also claims certain amount of promoting activities.
It is true that use of the mark may relate to goods about to be marketed and for which preparations by the undertaking to secure customers are under way, particularly in the form of advertising campaigns. However, mere preparation to use the mark — such as the printing of labels and producing of containers — is internal use and, therefore, not use in the course of trade for the present purposes (judgment of 11/03/2003, C‑40/01, Minimax, EU:C:2003:145, § 37). The submitted evidence does not show that any actual preparations to secure customers in a way that is more than merely token has taken place and the figures claimed in the submitted affidavit do not find confirmation in the remaining pieces of evidence.
Part of the submitted evidence, such as, the website printouts, email correspondence and the two online order forms (dated outside the relevant timeframe), originate from the internet. The standard applied when assessing evidence in the form of printouts from the internet is no stricter than when evaluating other forms of evidence. Consequently, the presence of the trade mark on websites can show, inter alia, the nature of its use or the fact that products or services bearing the mark have been offered to the public. However, the mere presence of a trade mark on a website is, of itself, insufficient to prove genuine use unless the website also shows the place, time and extent of use or unless this information is otherwise provided.
In particular, the value of the internet extracts in terms of evidence can be strengthened by evidence that the specific website has been visited and, in particular, that orders for the relevant goods and services have been made through the website by a certain number of customers in the relevant period and in the relevant territory. For instance, useful evidence in this regard could be records that are generally kept when operating a business web page, for example, records relating to internet traffic and hits attained at various points in time or, in some cases, the countries from which the web page has been accessed.
It is noted that the submitted email correspondence refers to conversation for clarifying details around eventual orders by ‘HG International’ to a manufacturer of socks. Irrespective of whether or not these orders were actually placed and executed, these emails do not provide information regarding the eventual further commercial realisation (sales) of the goods on the market within the relevant timeframe under the EUTM. The submitted invoices (dated 14/09/2015 and 24/11/2016), printouts from www.sears.com and summary table of the sales clearly refer to transactions outside the relevant territory (namely Canada and the USA).
The submitted proposals, contracts for a website, invoices for illustrations and a ‘lookbook’, and the draft of a ‘Style Guide’ only refer to preparation of a website and a catalogue, but do not show any relation to any potential or actual commercialisation of the goods at issue in the relevant territory (in the relevant timeframe). Even if the provided draft of the ‘Style Guide’ was a final version of a catalogue of the EUTM proprietor, there is no information to how many people this was circulated, who it was offered to, and whether it have led to any potential or actual purchases in the relevant territory within the relevant time.
Setting aside the question of nature of use of the EUTM, the printouts from the proprietor’s website, even though referring to some socks with prices in EUR and free shipping in the UK, do not provide any information about the eventual visits and commercial transactions from customers within the EU in the relevant timeframe.
Evidence referring to use outside the relevant period is disregarded unless it contains conclusive indirect proof that the mark must have been genuinely used during the relevant period as well. Events subsequent to the relevant period may make it possible to confirm or assess more accurately the extent to which the earlier mark was used during the relevant period and the EUTM proprietor’s real intentions at the time (27/01/2004, C‑259/02, Laboratoire de la mer, EU:C:2004:50).
However, in the present case, the two invoices (order forms) dated outside the relevant period (22/12/2018 and 26/12/2018) and the printouts submitted along with them do not confirm use of the EUTM within the relevant period: they make no reference to the relevant timeframe, and it cannot be inferred from them that a commercial activity in the relevant territory has been initiated or performed during the relevant period. Even if these two order forms could be related to the relevant timeframe, they only concern six pairs of products, which taking into account that the socks are comparatively cheap product (as also seen on the evidence) does not signal anything more than two isolated cases of commercial transactions. As such these pieces of evidence, even if they could have been related to the relevant timeframe, would not in any way suffice to show that the use is more than merely token.
Finally, the remaining registration information materials only refer to a company and marks being registered, but do not give information about the marketing of the relevant goods.
It follows that an overall assessment of the evidence does not allow the conclusion, without resorting to probabilities and presumptions, that the mark was genuinely used during the relevant period for the relevant goods (15/09/2011, T‑427/09, Centrotherm, EU:T:2011:480, § 43).
The methods and means of proving genuine use of a mark are unlimited. The finding that genuine use has not been proven in the present case is due not to an excessively high standard of proof, but to the fact that the EUTM proprietor chose to restrict the evidence submitted (15/09/2011, T‑427/09, Centrotherm, EU:T:2011:480, § 46).
Considering the above, the Cancellation Division concludes that the evidence furnished by the EUTM proprietor is insufficient to prove that the EUTM was genuinely used in the relevant territory during the relevant period of time.
It follows from the above that the EUTM proprietor has not proven genuine use of the contested EUTM for any of the goods for which it is registered. As a result, the application for revocation is wholly successful and the contested EUTM must be revoked in its entirety.
According to Article 62(1) EUTMR, the revocation will take effect from the date of the application for revocation, that is, as of 03/10/2018.
According to Article 109(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party.
Since the EUTM proprietor is the losing party, it must bear the cancellation fee as well as the costs incurred by the applicant in the course of these proceedings.
According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(ii) EUTMIR, the costs to be paid to the applicant are the cancellation fee and the representation costs, which are to be fixed on the basis of the maximum rate set therein.
The Cancellation Division
According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.